If you were looking for an original Christmas present for a friend or colleague this year, it would have been perfect if you could have bought for them the lovely Historia Gráfica de la Propiedad Industrial en Chile. According to the accompanying press release from INAPI the book covers in pictures the history of Industrial Property in Chile. Further details are available hereor from Diego Ponce G.(Communications, National Institute of Industrial Property, here).

Under Chilean law, public entities may not sell their publications -- though they can give them away, which is why copies of this title will be donated to public libraries in Chile. It's a long way to go if you want to read the book (or steal it, if you had your heart set on giving it as a Christmas present), so IP Tango hopes that copies will find their way to all who love IP and are interested in Chile's contribution to the field.

Monday, 29 November 2010

A keenly contested trade mark dispute between Unilever NV and Laboratorio Cuenca SA has been the subject of a ruling by Argentina's Federal Court of Appeals. In short, Unilever was the owner of the SUAVE trade mark, which it had used extensively on shampoos and conditioners since 1999 and for which it had two pending applications for registration. Cuenca used the trade mark ISSUE -- quite different, but accompanied by the words 'Shampoo Suave', on its products. Unilever sued for infringement, while Cuenca filed a counterclaim for annulment of Unilever's applications.

According to the trial court, the word SUAVE -- meaning "smooth" or "soft" -- was not distinctive. The court dismissed the complaint and allowed Cuenca's counterclaim. The Federal Court of Appeals disagreed. While SUAVE was a weak mark, due to the scale of use which Unilever made of it since 1999, its registration of the mark should be allowed since the word had acquired secondary meaning. In the court's view, the adjective 'suave' was not necessarily descriptive of shampoos and conditioners, but merely indicated a quality of the hair treated with the product. However, Unilever's infringement claim still failed. Because SUAVE was a weak mark, Unilever had to accept that third parties would use it in conjunction with their own marks, provided that they did not mislead consumers.

Wednesday, 24 November 2010

This time neither the Blu-ray nor the 3D DVDs escaped from Captain Hook. Informal traders are dealing with these two formats in the Mexican streets and they even have the latest release: Harry Potter and the Deathly Hallows Part 1 (just being released in cinemas in the UK!). Street vendors are also selling glasses to watch 3D movies. The counterfeited movies cost three to four times less than original the source observed.

The newspaper also reports that a few weeks ago, the federal police and officers from the Ministry of Public Security in Mexico City dismantled eight laboratories which produced these type of formats. They say that this was the first time that Blu-Ray movies were seized. How much was seized? Well almost to sink the pirate’s boat! 17 tons of material, such as: inside covers, cases, discs. They also seized 700 Blu-ray format burners.

It seems that the English has found again its way into the Brazilian market. After assisting Rio de Janeiro to be a host city for the Olympic Games in 2016, against strong competitors like Chicago and Madrid, and the recent successful Paul McCartney Tour in the city of São Paulo, the representatives of the United Kingdom Industrial Property Office (UKIPO) arrived in the city of Rio de Janeiro for a good mission: participate in the “INPI UKIPO Collaborative Agreements Workshop” on November 17 and 18.

Such Workshop aimed to present and discuss the Lambert Toolkit , which was developed in the United Kingdom to foster and facilitate university and business technological collaborations. This tool follows five basic models of research collaboration agreements that cover common scenarios in collaborative negotiations. It was presented to the Brazilians as an instrument to speed up negotiations and resume satisfactorily agreements involving universities, public research centers and companies.

This Toolkit was very much welcomed in view of the existing scenario pro innovation in Brazil, mainly set out by the Innovation Law (Law 10,973/2004). Nowadays, most of the restrictions to joint collaboration (universities and companies) were phased out and the property on an invention developed under such agreements does not belong necessarily to the university. Further to that, financing, subsidies and grants are secured to those who produce innovation.

The Workshop was very well attended by local companies such as PETROBRAS, EMBRAPA and the renowned University of Campinas, the University of São Paulo, the Federal University of Santa Catarina, the Federal University of Minas Gerais and the Federal University of Rio de Janeiro, among others.

After the success of the Workshop, the intention of INPI and UKIPO is to organize 2 road shows to evidence that Brazil has more than coffee, bananas and football. The UK seems to be very interested in the local innovations. Therefore, a road show will take place in London next year for those Brazilian companies and universities keen on showing their technical developments and seeking partnership. Afterwards, the show will be in Rio de Janeiro for the English.

Monday, 22 November 2010

Last Friday, Nov 19, the coffee producers in the Cerrado Mineiro submitted an application form to the Brazilian Instituto Nacional de Propiedad Industriale (INPI) to obtain Designation of Origin (DO) for their coffee. The coffee Cerrado Mineiro enjoys indication of source (IS) already -- granted by INPI back in 2005.

Both IS and DO are variations of Geographical Indication. However, DO is more complex and as such more valuable since it requires proof that the quality of the product comes from natural or human factors.

The Federation of Coffee Growers of Savannah, brings together more than 2,500 producers, and the Cerrado Mineiro annually produces five million bags of coffee (70% sold abroad).

On August this year, INPI granted the first Denomination of Origin to a Brazilian product. There is also another DO application pending for a national product: ‘Vale dos Vinhedos’(reported here).

Friday, 19 November 2010

The so-called BRIC countries (Brazil, Russia, India and China) are holding an IP FORUM in Rio de Janeiro, Brazil from the 2nd until the 5th of December. The title of the forum (title of today's post) appears to invite the audience to be aware of the IP system in these countries.

Speakers are mostly advocates and also officers from Trade mark/Patent Institutes. Apart from the issue of these four countries, there is going to be three more general sessions regarding IP in Latin America. For these sessions lawyers from Argentina, Chile, Colombia, Uruguay, Paraguay and Venezuela will discuss hot topics such as: trade mark fair use, parallel imports and border measures.

Thursday, 18 November 2010

A group of Costa Rican musicians massed in front of the Costa Rica Ombudswoman’s Office yesterday to demand payment of royalties, recognition of copyrights and respect for the rights of musicians as workers. According to Tico Times:

"Live music, ranging in style from acoustic folk rock to cumbia, floated over the Ombudswoman’s Office Wednesday as a diverse group of musicians gathered to present a complaint regarding disrespect of copyright laws in Costa Rica [IP Tango hopes that the music in question was cleared for performance in public ...].

The group of well-respected national artists claimed that the Arias administration’s policies on intellectual property rights were too lax, and called for payment of royalties and recognition of musicians’ rights as workers. ...

The group of musicians wants businesses like radio stations, restaurants and hotels to pay royalties – in the form of a percentage of the businesses’ earnings – for the music they play [This is an interesting proposition. Businesses that file tax returns tend to minimise taxable income, and from those businesses that escape or ignore the tax net it is hard to obtain any figures anyway. Are the musicians thinking of a percentage of the gross, perhaps? One can see the hoteliers and restaurateurs holding a demonstration of their own, if that's the case], and are requesting that Ombudswoman Ofelia Taitelbaum arrange for negotiations among the artists, businesses and the Legislative Assembly. ...

While Costa Rica is a signatory to five separate international copyright conventions and treaties, Taitelbaum wants to avoid legal action. Instead, she hopes to find a compromise between artists and business owners [Such compromise agreements are preferred by governments: if and when they break down, each side blames the other, or less frequently itself, but not the government].

“We’re going to try to bring both sides together to make a compromise,” Taitlebaum said. “If not, we’ll have to satisfy the law.”

No specific plans for a formal, moderated meeting involving both musicians and business owners had been announced as of press time".

Tuesday, 16 November 2010

In July of this year Chile's Intellectual Property Court upheld the dismissal of Iron Maiden Holdings Limited's cancellation action against Horacio Humberto Mardones Contreras' 1994 registration of the mark IRON MAIDEN for all goods in Class 25. The company -- the holding company for the British rock band Iron Maiden -- based its cancellation action on Chilean law and Article 6bis of the Paris Convention. While the claims under Chilean law were barred by a five year statute of limitation, the company maintained that no such limitation governed claims under Article 6bis, since the Convention states that “no time limit shall be fixed for requesting the cancellation…of marks registered in bad faith”.

The Intellectual Property Court didn't need to rule on that issue, since the company failed on the facts: it had not established the fame of its own mark or the bad faith of the defendant, both of which were requirements under Article 6bis. There was evidence enough that Iron Maiden was a well-known rock band, but this did not mean that its reputation extended to goods in Class 25. Accordingly it could not be presumed that the defendant registered the mark IRON MAIDEN in bad faith.

Sunday, 14 November 2010

A dispute over the transformers.cl web address was recently resolved in Chile. The web page was registered by an individual before NIC Chile and after some digging I found out that the web page was used as a message board, posting ‘bit and bots’ relating to the transformer toys and also where you could watch episodes from the transformer series.

The firm Baker & McKenzie in Chile, representing Hasbro Inc brought arbitration proceedings before Chilean domain name registry NIC. After five months the firm secured the transformers.cl web address for toy manufacturers Hasbro, after putting on the table strong arguments inter alia, transformer enjoys international fame and notoriety and that the trade mark was registered in Chile back in 1994 in more than one class.

Friday, 12 November 2010

Last Tuesday, November 9, 2010, the Fourth Chamber of the Superior Court of Justice (STJ) in Brazil confirmed the findings of the Instituto Nacional da Propriedade Industrial (INPI) on pharmaceutical patents filed before the current Law on Industrial Property (9279/96).

The current Law created the pipeline system to protect patent applications made in the pharmaceutical sector which previous legislation prohibited. Therefore, according to INPI, earlier requests (before the current law) that did not use the pipeline system could not generate protection.

In the present case the University of Arkansas (USA) tried to obtain a patent for use of conjugate vaccines, whose application was in 1992 (under the old law this was not possible). Therefore, with the entrance of Law 9.279/96, the University should have used the pipeline to achieve protection, but as it did not, the request was rejected by INPI.

On 30 September, NIC.BR (“.BR” Information and Coordination Entity) -- the entity responsible for the registration and maintenance of domain names in Brazil, published a regulation for resolving internet conflicts related to .br domain names via the Administrative System of Internet Conflicts (SACI-Adm). This system seeks to provide an alternative means of resolution of disputes involving the owners of .br domain names and third parties regarding the legitimacy of the domain names' registration, replacing the courts.

SACI-Adm cannot analyse or judge indemnification requests arising from the conflicts. Its governing regulation states that every domain name registered from 1 October 2010 will automatically adhere to this new system, which may be used whenever a domain name is registered in bad faith, causing damage to the title holder, given the use, without due cause, of an identical or similar term to (i) a Brazilian trade mark registration or application; (ii) a famous trade mark, even though it has not yet been filed in Brazil or (iii) a company name, civil name, family name, famous nickname, artistic name or even another domain name, previously registered, owned by the claimant.

The resolution of these disputes will be conducted by accredited institutions before NIC.BR. At present this means only the Brazil-Canada Chamber of Commerce (here), this being the only institution currently authorised to implement the new scheme. The main advantage of SACI-Adm is that it will accelerate the dispute resolution procedure, given that the new regulation requires that the procedure be completed within 90 days after it has began. This term may be extended, based on the discretion of the accredited institution, as long as it does not exceed 12 months.

Monday, 8 November 2010

While politicians discuss on the need to adopt new international rules to ensure the effective the enforcement of intellectual property right (e.g. ACTA and similar initiatives), this "IP Tanguero" believes that digital technologies do not only facilitate the illegal copy of intellectual creations but also facilitate the dissemination of knowledge and technology transfer. It is my opinion that there are not enough initiatives by public authorities in this direction.

As Negroponte explains in this interview for El Pais (in Spanish), the project is being particularly a success in Latin American countries such as Perú and Uruguay (a review of all OLPC projects in the world in available here). In this countries, there governments are strongly promoting the distribution of these laptops in primary and secondary school and they are organizing seminar to train teachers and students on their use.

From the point of view of Intellectual property, the most interesting aspect of the project is that, as Negroponte says, the laptop work with Linux, an operating system that, as most of the members of our audience know, is released under a free software license, the GPL. This is a great victory of the free software/culture movement and for the dissemination of knowledge. Some Western governments (Spain?) should learn from initiatives like this one and avoid getting everyone lock into proprietary softwares. In any case, I'm not completely sure about Negroponte assertion. Is it really like this? Aren't there OLPC laptops in certain countries that work with Windows?

Saturday, 6 November 2010

According to the Ministry of Foreign Trade and Tourism (Mincetur), next week Peru will culminate the process of legal review of the text of the Free Trade Agreement (FTA) between the European Union (EU) and Peru and Colombia.

In this regard, the Minister of Foreign Trade, Carlos Posada, notes that the Peruvian legal team has been progressively advancing in the legal review of the text, which according to him, is expected to close next week.

The Peruvian newspaper ‘La Republica’, also reports that Colombia will be holding next week, the fourth meeting of legal review of the said text. However, it mentions the complexity of the process for its counterpart: the EU, since they cover 27 countries that have to translate the text into their various languages.

I cannot wait to see the actual FTA. Last March I spoke about this FTA in a seminar hold at the University of Alicante, subsequently I also attended a conference in the US where I too dealt with some of the situations regarding the IP section of this Agreement. In addition, last week I submitted a paper in the Journal of Intellectual Property Law for consideration regarding the section of Geographical Indications of this FTA. As you can guess, I am pretty much anxious to see whether the text has been modified or has been kept the same as in the draft; but more importantly, my concerns is what will be the reaction of the Andean population when the text is finally disclosed and put into action.

More than 20 drug patents to expire in the next two years and laboratories are looking for a market over $ 1 billion, said Brazilian National Association of Laboratories (alanac).

There is no doubt that someone is benefiting from the expiration of patents, here is what Alanac said: “The generic Viagra may become the drug with the highest turnover of the segment in the country in 2011.”

Pfizer lost its patent in June 2010 (a decision held by the STJ, posted here). The generic drug therefore, has been sold and marketed for only a few months and since its launch sales are growing at around 20% per month, the President of Pro-Generic, Odnir Finotti explains. He continues, “If we do not have large fluctuations, the total volume of business in 12 months for Viagra will be at least $ 84 million... But if the growth trend continues, sales of the drug could reach $ 150 million at the end of one year”.

Thursday, 4 November 2010

18/10/2010, Geneva. Brazil, India and South Africa joined forces to reject pressure for the extension of intellectual property rights and called for effective use of flexibilities such as compulsory licensing.

The position was manifested in a crowded seminar promoted by these three countries for the international community. The seminar also addressed ‘legal confusion’ between generic and counterfeit drugs.

Brazilian Ambassador Maria Nazareth Farani Azevedo explained that "Counterfeit drugs are a serious problem. Nobody is here to promote the sale of counterfeit or to promote the sale of any medication to the detriment of the human right to health".

The Brazilian position is to combat counterfeit medicine as a crime against public health, and not the private right, said Erika Vega, representative of the National Health Surveillance Agency (Anvisa).The agency reported that in 2009, it has made over 53,000 arrests and confiscated over 235,000 tons of unregistered drugs.

According to the organization Doctors Without Borders, which operates in over 60 countries, explained that the price of medicines is central to combating counterfeit, but also added that "competition is as important as the production of generics."

The news reported that “some participants did not hide their surprise at the price of generics in Brazil, considered very expensive for a country that seeks to exercise leadership in the area.” The information refers to an article written by the American scholar Robert Naiman published in the "Press Review" of the WTO, in which the author “urges Brazil to be more forceful and effective leader for access to essential drugs. If Brazil strongly promoted the production of generic alternatives, this would result in lower prices for the country and lower for other countries".

Interfarma, the entity that represents the pharmaceutical industry, explained that there is not such a thing as a war against generics. On the contrary, the pharmaceutical industry wants to do a mix of brand-name drugs, generics and the like, and wants to ensure the safe and effective product.

One of the proposals to modify the Brazilian copyright law rests on the creation of a government structure to regulate and monitor the activities of the Brazilian Central Collection and Distribution Office – ECAD – who collects and distributes public performance royalties to composers and singers. Besides ensuring that the collected royalties get to those who really perform the musical work, the monitorance of ECAD’s activities will prevent such society from abusing the power granted by the Copyright Law.

In this perspective, the Federal Chamber of Deputies started examining Bill of Law 7375/2010 that exempts the payment of copyrights from the reproduction and public performance of musical works in non profit events. Example of non profit events considered public by ECAD may be marriage parties, graduate ceremonies, family gathering parties, church and other public festivities organized to obtain remuneration from the selling of tickets, but without profits.

I know that you, as a foreigner, may think bizarre the aforementioned Bill 7375/201, but restricting the public events that ECAD may collect royalties from is of utmost importance, as it is very common a family’s or wedding party being interrupted by ECAD’s authorities charging for the performance of music played there.

From the interior of Brazil, it is also very popular churches promoting in June of each year the “Festa Junina” (named Saint John’s), which is a party centered on the saint’s day and when the common dance “Quadrilha” and typical music are performed to the population. Priests take the chance and may use the “Festa Junina” to collect fees when rebuilding churches and religious sites are needed, as they are far away from the Vatican. Therefore, they become mad to have a visit of any ECAD’s personnel to attempt to get the piece of the collected remuneration for copyright purposes.

Local Scholars say that due to unreasonable practices, ECAD’s activities are not well comprehended by the population and suffer prejudices. In fact, ECAD is under examination by the Antitrust Division of the Ministry of Justice so-called SDE. Further to that, it is believed that ECAD’s strict measure may hamper the organization of cultural events which use music as an attraction but do not aim necessarily to obtain profits.

Therefore, Bill 7325/2010 expresses the feelings and the disapproval of the Brazilians towards unreasonable collection of royalties from public performance of local culture to private parties. Heated discussions on ECAD’s impact of culture access by the local populations are very much expected, as the advocates of the free movement of culture will recall Art. 215 of the Federal Constitution that secures to all citizens the access to sources of national culture and the full exercise of cultural rights.

On the other side, ECAD’s authorities will evidence its importance and it will use the jurisprudence formed at the Superior Court of Justice in its favor to collect royalties from the execution of music in public by any means.

While battles at the Brazilian Parliament will be seen shortly, the population determines that ECAD sometimes (or most of the time) hamper culture divulgation and violate private rights. Therefore, the approval of Bill of Law 7325/2010 is unanimously in Brazil and aims not to end ECAD but to regulate it.